When is the best time for SMEs to file a patent application?

While I’d love to give a straightforward answer, the truth is the ideal timing depends on a few factors. Some patent attorneys will say as soon as possible is always best, and it might be from a strict legal perspective, but not when taking your business needs into account.

Yet working out a timeline is key to balancing the risks and rewards of filing a patent application, particularly in the early stages of building your intellectual property (IP) portfolio. We’ll run through both the business and legal considerations you need to take into account.

Why getting the timing right is important

If you don’t get the patent filing date right, it could ultimately impact what legal rights you can secure and the overall commercial value of your invention. Filing a patent is a big investment. So you don’t want to put money into the process and not get the best possible results for your business.

For example, if you file too early, you could be paying for an application that’s too immature and won’t prove your invention’s patentability. On the other hand, filing too late could risk your competitors submitting their application first and gaining market advantage. Both can have an impact on the commercial viability of your invention.

What can affect filing timelines?

When working out your patent filing timeline, there are a few elements you need to weigh up to make sure you get the best legal and business outcomes.

Budgets

This is likely to be the biggest factor in your mind. There are lots of cost-effective ways to file a patent application, but you’ll still need enough cash to pay for the initial drafting and the official fees for filing. 

The investment is usually between £3,000 and £5,000 for a straightforward mechanical invention, but it can vary depending on the technical complexity, legal scope and where you want to file. So it’s worth getting a ballpark quote from a patent attorney.

It’s vital to consider the ongoing budget. Once that first application is filed, there are deadlines and costs that are unavoidable if you want to stay protected. For example, if you want to file outside the UK, you will need to file overseas applications by the anniversary of your UK filing date. You might decide to file a “PCT” or “international”  patent application at that stage, which then sets a further deadline for pursuing protection in any countries of interest. 

These deadlines all involve spending more money- and if you don’t have the budget in place you can lose out on business critical patent protection. All good patent attorneys can help you budget, and make sure these critical expenses are in your business plan.

The key takeaway here is that once you start that patent journey, you are committed in terms of timescales and costs, so you need to be prepared.

Product development

Where you are in your  design process is an important consideration when deciding the best time to file. If you’re only at the ideas stage, then there’ll be very little technical detail to put into the patent application. This can make it weak. There is also the risk that the design could evolve, possibly even making an early application irrelevant. That’s why most SMEs file around, or just after, the prototype stage- when the underlying principle of the product is well understood and has crystallised. The  product may change as development continues, but as long as the underlying principle remains, the patent application stays relevant and useful.

Third party disclosure

One of the biggest concerns people have is around talking to suppliers and potential customers about their invention. Can they do this before an application is filed? What if you really need to talk to potential customers to understand if the product is viable, and don’t want to waste money on a patent application if it isn’t?

If you can establish conditions of confidentiality with that third party (e.g. through a non-disclosure agreement) then you can disclose your invention before filing. This allows you to sound out trusted potential customers, investors etc. before committing to the expense of filing.

This is not always the case though- sometimes NDAs are not an option. Sometimes you want to “soft launch” the product publically (e.g. for a crowd funding campaign). Under those circumstances, I always advise getting that first application filed.

Otherwise, any details you share could be considered ‘prior art’ and could risk your application being refused, as your invention isn’t considered ‘new’.

Competition

One of the main motivators for securing a patent is to gain competitive advantage and establish your business as a market leader. 

Most countries operate a “first to file” system. This means that if you and someone else both have the same idea, independent of each other, the first person to file the patent application gets priority. Being in this position can seriously compromise not only your ability to protect your invention, but also to launch it into the marketplace.

If you work in a “patent heavy” industry, or are aware that the problem you are trying to solve is something others are looking at, “sooner rather than later” may be the best approach.

Business plans

Your business plans can dictate both when, and whether, to file applications.

For example, a company that has developed a new inventive manufacturing method that they plan to monetise themselves for years to come may decide to keep it as a trade secret for the time being. They know they can file a patent application later on, but there is no rush.

On the other hand, if the same company decided that it wanted to go up for sale to a larger company that valued registered IP above all else, they may decide to forego the trade secret route and file a patent application to the process. This would potentially make them a more attractive target for acquisition.

To get the full value of your patent, you need to match legal timelines to your business plans. This doesn’t just stop at one patent application, but should run across any legal rights you’re looking to gain for your innovations. By aligning your business plans with an IP strategy, you can make sure your portfolio is returning on your long-term investment.

How to work out the best time to file a patent

To work out the best time to file your patent, you need to weigh up all the above factors and map the plans for your IP portfolio alongside your business priorities. Getting commercially-focused advice from an experienced patent attorney will ensure you can plan adequately and get the best value from your IP investment.

Any questions? Give us a shout.